U.S. Patent Prosecution for the European Practitioner: Tips, Tricks, and Pitfalls

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1 AIPPI BALTIC CONFERENCE Enforcement of IP rights and survival in new environment April 19-21, 2011 Riga, Latvia U.S. Patent Prosecution for the European Practitioner: Tips, Tricks, and Pitfalls John Osha Assistant Reporter General, AIPPI Managing Partner, Osha Liang LLP

2 Case 1: O.I. v. Tekmar Fed. Cir. 5/1997 Method and Apparatus for removing water vapor from a sample in a gas chromatograph Independent claims recite passage through which sample will pass Dependent claims specify passage produces swirling

3 Case 1: O.I. v. Tekmar All embodiments in Detailed Description stated passage was either non smooth or conical Stated purpose of nonsmooth or conical passage was to produce swirling

4 Case 1: O.I. v. Tekmar Accused device used a smooth passage Neither grooved nor conical Federal Circuit limited passage to mean nonsmooth or conical Even though Dependent claims to non smooth or conical Much more narrow than common meaning

5 Case 1: O.I. v. Tekmar This could have been avoided! Inclusion of a smooth embodiment of the passage explicit statement that passage is not limited to non smooth or conical use of generic and specific (or sub generic ) terminology passage for the narrow meaning conduit or channel for the broad meaning

6 Claim Construction Words & phrases in a patent claim are to be given their ordinary and accustomed meaning unless: An examination of the specification, prosecution history, and other claims of the patent indicate that the inventor intended otherwise The inventor can be his own lexicographer

7 Claim Construction lek-se- kag-re-fer n : an author or editor of a dictionary Patent Specification is a dictionary of terms used in the claims KEY POINT: Never be an unintentional lexicographer

8 Loophole in U.S. Claim Construction Claims may be limited to a specific embodiment through unintentional defining of claims This can be very frustrating for the applicant They may have had no intent to limit the claims in this way

9 USPTO WILL NOT interpret terms in view of the Specification PTO will always give broadest reasonable interpretation to the claims Limiting terms through usage in the specification creates the worst of both worlds: broad construction during examination narrow interpretation during enforcement

10 Summary Point # 1: Avoid limiting usage of terminology Where possible, state explicitly that the term is used in its broadest sense Suggest other embodiments and possibilities Choose different terms for generic versus specific meaning in disclosure When in doubt, define it!!!

11 Example 1A: Specification says: The passage 31 is internally threaded, which causes a swirling of the analyte slug for assisting in the removal of water vapor May result in limited interpretation of passage

12 Example 1B: Specification says: In the embodiment shown, the passage 31 is internally threaded, which causes a swirling of the analyte slug for assisting in the removal of water vapor. However, the term passage as used herein is generic and is not limited to any particular shape or type of passage. Excellent, but cumbersome

13 Example 1C: Specification says: In the embodiment shown, the passage 31 is internally threaded, which causes a swirling of the analyte slug for assisting in the removal of water vapor. Alternatively, the interior of the passage may be smooth or of any other appropriate shape and texture. Excellent for case where other options are known or can be suggested

14 Example 1D: Specification says: A channel is provided to pass the analyte slug from A to B. In one embodiment, the channel may be a passage 31 (see Fig. 4) that is internally threaded, which causes a swirling of the analyte slug for assisting in the removal of water vapor. Generic versus specific language

15 Case 2: G&S Metal v. Ekco *G&S Metal Prods. Co. v. Ekco Housewares, Inc. (Fed. Cir. Mar. 17, 1998) Insulated baking pan Two nested members Bottom walls cooperate to form an insulating chamber Claims require: said bottom and side walls of said members having the same size before they are nested together

16 Case 2: G&S Metal v. Ekco Ekco pan uses inner member of same size at the bottom, but of slightly different height District Court found infringement: the term same size does not require that the inner and outer members have precisely the same height Federal Circuit Reversed held the term same size was defined in the specification to require all dimensions of the members to be identical

17 Case 2: G&S Metal v. Ekco How did the Federal Circuit reach this conclusion, when the size referred to was clearly the size at the bottom of the members? They looked to the detailed description: the written description unequivocally calls for the inner and outer pans to be of identical size along the sides and bottom. They looked to the summary of the invention: Further, in accordance with the present invention the two layers are formed of identical size along the bottom and sides thereof.

18 Case 2: G&S Metal v. Ekco THIS COULD HAVE BEEN AVOIDED! Use of definite article ( the ) to define the invention in terms of a disclosed embodiment will often result in limited interpretation of claims Disclosure of only a single embodiment is often dangerous

19 Summary Point # 2: Always refer to embodiments or aspects of the invention, not the invention Try to include multiple embodiments If not possible, suggest other possibilities

20 Case 3: Amhil v. Wawa Beverage Container Lid Claims require: skirt portion 26 having a plurality of outwardly extending projections 28, each having a substantially vertical face 100 with substantially vertical side edges 102 and substantially vertical side walls 30 Amhil Enterprises v. Wawa, Inc. 81 F3d 1544 (1996)

21 Case 3: Amhil v. Wawa Projections of accused device were not exactly vertical substantially would normally encompass this small variation Why no infringement? Significant factor for the court: applicant used substantially vertical and vertical interchangeably in the specification

22 Summary Point #3 Focus on precise and consistent use of terminology Pick a term Define it if necessary Don t deviate

23 Case 4: Kumar v. Ovonic Battery Co. 1. A system for retrievably storing hydrogen comprising: an amorphous rare earth transition metal alloy material. What does amorphous mean? Is it a question of degree? KAPLESH KUMAR, v. OVONIC BATTERY CO., INC. Fed. Cir. 2003

24 Case 4: Kumar v. Ovonic Battery Co. Defendant proposed dictionary definition, defining amorphous as without real or apparent crystalline form: uncrystallized. Webster s Third New International Dictionary (1981). Trial Court: completely amorphous Federal Circuit: in which the constituent atoms are arranged in a spatial pattern that exhibits no long range order, that is, it is non crystalline. Definition came from a prior art patent cited within the Kumar patent

25 Summary Point #4 Most terms will have variable meanings depending on context Many different definitions will be proposed at trial Don t allow the judge to choose When in doubt, define it!!!

26 Background and Summary Classic approach is to discuss all the problems in the prior art build a straw man cut it down with objects in the summary The Classic approach is very dangerous

27 Case 5: Renishaw v. Marposs Patent describes a probe having a stylus mounted in a stylus holder and projecting through an aperture in the probe housing Stylus is displaced upon contact with a target Invention is described as overcoming two problems in the prior art: Lobing Hysteresis Renishaw v. Marposs 158 F.3d 1243 Fed. Cir. (1998)

28 Case 5: Renishaw v. Marposs All disclosed embodiments were directed to observing deflection as quickly as possible The claim recited: A touch probe, for use on a movable arm of a position determining apparatus, the probe having a housing with an axis and a stylus holder located within the housing, the stylus holder carrying an elongate stylus which projects though an aperture in the housing and which has a sensing tip at a free end thereof, the probe generating a trigger signal when said sensing tip contacts an object and said stylus holder is thereby deflected relative to said housing.

29 Case 5: Renishaw v. Marposs Accused device had a slight intentional delay between deflection of the stylus and generation of the trigger signal The Court found no literal infringement based on construction of the term when When was interpreted to be limited to very, very soon after contact The Court s rationale: when has more than one possible meaning At the exact moment At or after Must look to the specification for guidance

30 Case 5: Renishaw v. Marposs [The claim] does not exist in rarefied air, but rather is surrounded by a patent disclosure of singular purpose. This singular purpose, according to the Court, as generating a trigger signal as soon as possible after deflection The Court relied on numerous statements in the Patent The Summary The preferred embodiment of the probe includes means for providing a signal when said stylus contacts a workpiece. Object of the invention is described as overcoming two problems in the prior art: Lobing Hysteresis

31 Summary Point #5 Avoid objects, purposes, and goals of the invention claims may be limited to devices or methods that can satisfy some or all of the stated objects Avoid limiting invention to something that can overcome a particular problem Unless you are sure you can accept this claim scope!!! Safest approach is to copy the independent claims into the summary

32 Case 6: Cortland v. Orvis CORTLAND LINE COMPANY, INC. v. ORVIS COMPANY, INC , Fed Circuit (2000) Fly fishing reel Reel includes: first end plate first spool axle second end plate connecting means

33 Case 6: Cortland v. Orvis Primary issue on appeal: Meaning of the term plate Court referred to the Brief Description of the Drawings to determine meaning: Moreover, in the 003 patent s Brief Description of the Drawings, the patentee states that FIG. 1 shows a side elevational view in accordance with the present invention. (Emphasis added by the court). Indeed, figure 1 illustrates the only embodiment of the invention. Thus the specification supports the conventional meaning of the word plate as a broad, flat disc.

34 Summary Point #6 Always refer to embodiments or aspects of the invention when referring to specific embodiments When only a single embodiment is shown, suggest other possibilities

35 Detailed Description Examples Example: The insulating layer 12 is polyesterimide. Try instead: The insulating layer 12 may be formed from any suitable material, for example, polyesterimide. Or even better: The insulating layer 12 may be formed from any suitable material, for example, polyester, polyesterimide, siloxane polyesterimide, and combinations thereof. In the exemplary embodiment shown, layer 12 is formed of polyesterimide.

36 The End Thank You! Enforcement of IP rights and survival in new environment AIPPI BALTIC CONFERENCE April 19-21, 2011 Riga, Latvia